Guidance

Fast track opposition

Updated 14 January 2019

1. Benefits of fast track opposition

The fast track opposition process is intended to benefit business by improving access to opposition proceedings and provides a faster, cheaper and less complicated way for business to protect their trade marks.

The costs awarded in Fast Track Oppositions are capped at £600 (excluding official fees). Further information can be found in Tribunal Practice Notice 1/2023.

Any person who wishes to lodge a fast track opposition should file a Notice of Opposition using the form TM7F with the appropriate fee of £100 to accompany the form.

2. What is fast track opposition?

When a trade mark application has successfully completed the examination process it is accepted and published in the on-line trade marks journal. It is then open to a third party (an opponent) to oppose its registration. A fast track opposition is made by the owner of an earlier mark which is identical or similar to the opposed mark and can only be brought on grounds of complete identity or a likelihood of confusion.

A fast track opposition is intended to provide a faster, cheaper and less complicated way for business to resolve suitable disputes.

Who can oppose using the fast track opposition procedure?

Only the owner of an earlier trade mark may oppose under the fast track procedure.

Can the trade marks tribunal stop me from pursuing a fast track opposition?

Yes, the registrar can covert the opposition into a standard opposition if it considers it to be inappropriate for the fast track route. The decision will be made at the discretion of the Hearing Officer who can only consider doing so if the opposition does not meet the requirements for a fast track opposition, but would meet the requirements for a standard opposition.

When should an opposition be filed?

There is an initial two month period beginning immediately after the date of publication of the trade mark in the trade marks journal.

Can the opposition period be extended?

The opposition period may be extended to three months for any party who files an electronic form TM7a ‘Notice of threatened opposition’ within the initial two months. The form is only available as an e-Form on the trade mark section of the IPO website. It should be noted that a party may file the TM7a before deciding if they will lodge either a standard of fast track opposition. Either a TM7 ‘standard opposition’ or a TM7F ‘fast track opposition’ may be filed during the extended period.

Filing a TM7a does not commit you to filing an opposition, though you should not file one unless you are seriously considering doing so.

3. Filing a fast track opposition

How much does it cost to file a TM7a?

There is no fee payable with this form.

What should I do if I receive a TM7a?

You may want to consider contacting the party who has filed the TM7a to see whether an amicable resolution can be agreed. For example, an amendment to the list of goods/services may resolve the potential conflict thus avoiding the need for any opposition to your application.

Will the Tribunal be able to advise me on how to prosecute my case?

No, the Tribunal must remain impartial at all times although we can help you with procedural matters. Therefore, you may wish to consider obtaining professional legal advice from a registered trade mark, or patent attorney, or a solicitor before you make any decision on how to proceed.

You can contact the Chartered Institute of Trade Mark Attorneys, the Chartered Institute of Patent Attorneys or the Law Society.

Do I need to be represented by a solicitor, trade mark or patent attorney?

The fast track opposition procedure is intended to be more straightforward and less time consuming than the standard opposition procedure and this should allow more parties to represent their own cases.

How can I limit the list of goods/services to overcome the opposition?

You can inform the trade mark examiner of any changes to your application by submitting a TM21B ’Changes to an application’. The examiner will consider the amendment and tell you if it is clear enough to be accepted. If acceptable your application will proceed to registration.

What happens if the proposed amendment is rejected by the examiner?

The examiner will tell you why the proposed change is not acceptable, which may help you to propose an alternative acceptable restriction.

How much does it cost to file a TM21B?

There is no fee payable with this form.

What if I don’t want to proceed with my application?

You may withdraw your application. You must put your withdrawal request in writing.

Will I have to pay any costs if I withdraw my application?

If you withdraw your application before an opposition is filed, you will not be liable for costs. However, if you withdraw your application after an opposition is filed and the opponent has, prior to filing the opposition, given you a reasonable chance to withdraw your application then you may be liable for some limited costs.

What should I do before I file an opposition?

If you are considering opposing a trade mark application, you should approach the applicant to see if you can reach a resolution to the conflict without the need to resort to legal proceedings. If you file an opposition without first having contacted the applicant and the applicant withdraws the application without defending it, you will not be awarded any costs and you will not recover the cost of filing the opposition.

How do I file a fast track opposition and what does it cost?

If you want to oppose the registration of a trade mark using the fast track procedure you must file a TM7F ‘notice of fast track opposition’ accompanied with the £100 fee.

Where should I send the TM7F?

You must send the TM7F by post to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

All other non fee bearing forms for the Tribunals can be sent to [email protected].

Do I have to send a copy of the TM7F to the applicant?

No, the tribunal will send a copy of the TM7F, and any associated evidence, to the applicant and the Tribunal will copy to the opponent any defence filed in response. However, the Tribunal will not, as a matter of course, copy any other document. To ensure fairness and transparency of proceedings, it is imperative that any correspondence, including forms, sent to the Tribunal is copied to the other side and contain confirmation that it has been copied. If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behaviour and there may be cost implications at the conclusion of the proceedings.

What happens once the TM7F has been received?

The Tribunal will check the TM7F to make sure that it has been submitted within the time period allowed and that the correct fee has been paid; and that sufficient information has been provided for the opposition to proceed.

What happens if I haven’t sent the correct fee with the TM7F?

In order for the TM7F to be validly filed it must be accompanied with the correct fee.

When will the applicant know that I have submitted a TM7F?

Once the formalities check has been concluded, the Tribunal will serve the TM7F on the trade mark applicant.

What does the applicant have to do?

The applicant will have two months from the date the TM7F is served to file a TM8 ‘Notice of defence and counterstatement’.

If the applicant agrees with anything that the opponent has said in the statement of reasons, he should say so. If the applicant does not accept something that the opponent has said, he should say why.

How much does it cost to file a TM8?

There is no fee payable with this form.

Can the time period for submitting a TM8 be extended?

The period for filing the TM8 can only be extended if the parties agree to enter a cooling off period. See process for filing a TM9C below.

What happens if I do not file a TM8?

If no notice of defence is submitted within the period allowed, the application may be deemed as abandoned. If only some of the goods and/or services have been opposed, the application will be deemed abandoned in respect of those specified items and the trade mark will be registered for the remainder of the goods/services.

Will I have to pay any costs if I do not file a TM8?

If you do not file a TM8 and the opponent did not give you reasonable chance to withdraw the application before filing the opposition, you will not be liable for costs. However, if you did get a reasonable opportunity to withdraw and you put the opponent to the cost of filing an opposition, then you may be liable for some limited costs.

What happens if the parties wish to negotiate a settlement?

If the parties wish to seek a negotiated settlement and avoid the cost of continuing with the proceedings, they can file a TM9C ‘Request for a cooling off period’ (no fee required) which will extend the period for the filing of the applicant’s defence.

When can ‘cooling off’ be requested?

The TM9C must be filed within the two month period allowed for the applicant to submit the notice of defence of the trade mark application. This gives the parties nine months from the date that the opposition is served on the applicant in which to try and reach a settlement.

Who can ask for ‘cooling off’?

Either the applicant or the opponent can ask for a ‘cooling off’ period, but both parties must agree to it.

Can the cooling off period be extended?

The parties can request an extension to the initial nine months cooling-off period by submitting a TM9E ‘Request for an extension to the cooling off period’ (no fee required). This will extend the cooling - off period by a further nine months (to a maximum period of eighteen months). The request must include a statement confirming that the parties are seeking to negotiate a settlement to the opposition proceedings.

What happens if the parties cannot reach an agreement?

If negotiations break down at any time, either side can end the ‘cooling off’ period. The applicant does this by submitting a TM8, whilst the opponent submits a TM9T ‘Request to terminate a cooling off period’ (no fee required). The applicant is then allowed one month within which to file the notice of defence on a TM8.

What happens after the TM8 has been received?

Once the formalities check has been completed and the Tribunal has accepted the TM8, it will be served on the opponent.

What evidence do I need to file in a fast track opposition?

You should follow the instructions listed on the TM7F and complete all of the required fields. If you are the opponent, and you are relying on an earlier mark that is subject to proof of use (i.e. marks that were registered five years or more before the date of application (or priority date, if applicable) of the opposed mark you must be able to file evidence of use at the time of filing the opposition. Opponents who are unable to file such proof, or who would prefer to wait and see if it is requested by the applicant, may file a standard opposition instead.

What must my proof of use show?

The evidence must show that the earlier mark has been put to genuine use in relation to the goods/services for which it is registered, during the five years leading up to the filing date of the opposed mark (or its priority date, if applicable).

The evidence should demonstrate:

• that the trade mark has been used in relation to the goods/services relied upon for the purposes of the opposition
• the volume of sales of those goods/services under the trade mark during that five year period
• if possible, examples of the mark in use in relation to the goods/services for which use is claimed e.g. copies of sales invoices or similar sales records or advertisements/brochures etc
• the period of time during which the mark has been used and the geographical area that the use covered
• how the mark is used in relation to the goods/services e.g. on labels, signs, invoices, advertising materials etc

How should I present this evidence?

Your evidence should be presented in a clear and structured manner. You should clearly number all of your exhibits, with the page number of each exhibit being applied to the bottom right hand corner of each page. Your exhibits must not exceed 100 pages in total.

I want to file additional evidence, is this permitted?

Either party may make a request to file further evidence. However, it will be at the Hearing Officer’s discretion as to whether further evidence is allowed. Only in exceptional circumstances will further evidence be permitted within the fast track opposition procedure. For disputes that require factual evidence (beyond evidence of use of the earlier mark(s),) the standard opposition procedure should be used.

Am I entitled to a hearing if I use the fast track procedure?

You will not be automatically entitled to a hearing if the case is being dealt with as a fast track opposition. The fast track is intended to provide a faster, more streamlined method to resolve disputes that are lower in complexity. If the dispute is complicated enough to require an oral hearing, serious consideration should be given to filing a standard opposition. However, either party may make a request for an oral hearing. In certain circumstances the Hearing Officer will decide that it is necessary in order to make a fair decision on the case. It should be noted that only in exceptional circumstances will such a hearing be permitted. If a hearing is appointed, the parties will have a chance to make their arguments through written submissions.

How long will it take to receive a decision in a fast track case compared to the standard opposition?

The average time taken to issue a fast track decision is three months.

A decision using the standard opposition procedure should be made in approximately 12-15 months.

Can I challenge the Hearing Officer’s decision?

If either party feels that in reaching his decision, the Hearing Officer has made an error on a point of law, or that s/he has made an unreasonable decision on the facts, then an appeal within 28 days from the issue of the decision can be filed.

To whom do I appeal?

The appeal can be either to the Appointed Person or to the High Court.

What is an Appointed Person?

An Appointed Person is a senior intellectual property lawyer appointed by the Ministry of Justice; s/he is wholly independent of the Tribunal.

The Appointed Person offers a low cost alternative to appealing to the High Court

How do I appeal to the Appointed Person?

An appeal to the Appointed Person is made by filing a TM55P ‘Notice of appeal to the Appointed Person’. The notice of appeal must include the grounds of the appeal together with any relevant trade mark law and legal authorities relied upon in support of each of the grounds of appeal.

What does it cost?

The fee is £250.

How do I appeal to the High Court?

The procedure for making an appeal directly to the High Court is set out in the Civil Procedure Rules Part 52 for Appeals and Part 63 which relates to Intellectual Property claims.

If you appeal to the High Court you should send us a copy of your appeal and keep us informed of the outcome as the Tribunal does not play any part in those proceedings.

What does it cost?

You will need to ask the court for information on court fees and any award of costs should your appeal be unsuccessful.

Can I challenge the outcome of the appeal?

The Appointed Person is an appellate tribunal whose decision is final. Decisions by the High Court may be appealed, if the party is given leave, to the Court of Appeal.

4. Costs in fast track opposition

Will I be able to recover all of my costs before the tribunal?

The costs awarded in fast track oppositions are capped at £600, excluding official fees. This will be made up of:

• £250 for filing a notice of opposition or considering a notice of opposition and filing a counterstatement, and up to £350 for filing written submissions

As a safeguard against possible abuse of the costs cap, it will not apply where a party is found to have acted unreasonably in their conduct of the proceedings. In those cases costs will be awarded at an appropriate level, which may be full compensatory costs.

Will I be able to recover all of my costs before the Appointed Person?

At the conclusion of an appeal hearing the successful party may request that an award of costs be made in its favour. There is no upper limit to the award which may be made but it is established practice that the Appointed Person awards costs from an official scale. The scale reflects a variable amount for the preparation and attendance at the appeal hearing. A party without legal representation will only receive 50% of the amount from the official scale. This ensures that the unrepresented party is not overcompensated for the cost of the appeal proceedings.

What is the scale?

The current scale may be viewed at TPN1/2023.

Previous scales can be viewed on the National Archives website.

Will you enforce the costs award if the other side doesn’t pay?

No. The enforcement of any award is a matter for the successful party. An order for costs may be enforced in the same way as any order of the High Court. Failure to pay an award may result in the details of the failure to comply with the costs award being published see Trade mark disputes: unpaid costs orders.